Re: [wg-c] trademark law & new gTLDs

["Martin B. Schwimmer" <martys@interport.net>]

>
>> I couldn't help but notice that you didn't address my second point
(i.e., while use of a mark has to be "commercial" it doesn't have to cause
a likelihood of confusion to dilute a famous mark under §43(c) of the
Lanham Act)
>
">Doesn't matter. My point is simply that determining whether confusion or
commercial use exist requires *looking at the use of the domain name* ex
post registration. It cannot be determined pre-emptively or in advance.
Therefore, any solution to the TM problem that attacks registration in
advance of use goes well beyond the protections of trademark law. More
importantly, it violates the policy rationale of consumer protection and
turns the trademark into a sweeping monopoly on a character string."


Trademark laws act preemptively.  If I own a registration for EXAMPLE for
widgets, and a third party files an ITU application for EXAMPLE (or
something similar) for widgets (or something similar), the trademark office
will refuse registration, regardless of whether the applicant ever made
use.  The ability of a trademark office to determine the right to register
without evdience of applicant's (or in some countries, registrant's) actual
use ever taking place exists in virtually every trademark jurisdiction in
the world. 

So attacking registration "in advance of use" is not "well beyond trademark
law" but is in fact the universal norm.

but thanks for the free legal advice.  

The difference in a tribunal determining the right to register in advance
of use is the stated context of the domain name (btw this has been
discussed previously, see e.g. my response to WIPO RFC-2).  A trademark
application for NIKE which states an identification of sportswear without
use can be evaluated differently than an application for NIKE for Greek
antiquities without use.  In both cases a determination of likelihood of
confusion can be made.

If new TLDs contain category-identifying suffixes (like .shoes or .art)
then a determination can be made that nike.art should not be refused prior
to use, based on a challenge by Nike Shoes.  If a new TLD has a
non-distinguishing suffix (such as .biz or .firm) and there is a charter or
a declaration of intent (As in "I will sell Greek antiquities (and
impliedly not sell sportswear)) then again, a determination prior to use
can be made.

But to adopt an anything goes attitude because of the theoretical
possibility that the person who registers nike.biz or nike.firm wants to
sell Greek antiquities is willful blindness masquerading as open-mindedness.







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